For the past two decades, rather than having to seek only country by country protection through the separate national offices of the member states, prospective right-holders can now obtain – via a single application – a registration that, once granted, covers automatically all of the European Union ("EU") member states. Being a multi-jurisdictional unitary right, the scope of protection of an EU trade mark ("EUTM") is indivisible. Its nature is tied directly to what constitutes the single market of the EU, underpinning the development of "Fortress Europe" so as to facilitate the free movement of goods and to give broad protection for rights-holders through the grant of EU-wide injunctions against infringers.
In addition, over the past 30 years there has been an extensive process whereby differences between the national trade mark laws and registration procedures of the various member states, have been ironed out. This harmonisation has promoted a consistent application and interpretation of national trade mark registrations (as well as EUTMs), giving greater certainty and clarity to rights-holders and consumers.
During the negotiations between the United Kingdom ("UK") Government and European Council, a majority of key principles which will underpin trade mark laws going forward have been agreed and the UK Government has provided certain guidance on how these principles will be fulfilled in practical terms. However, there remain outstanding points of principle which remain unresolved between the UK Government and the EU, or the method of their implementation has not been explained.
Will my EUTM still cover the UK?
Following Exit Day, EUTMs will no longer extend to protecting the trade mark within the UK.
Therefore, in order to ensure continued protection for pre-existing EUTMs, owners of EUTMs registered by Exit Day shall become the owner of a comparable registered and enforceable intellectual property ("IP") right in the UK, without the need for any further application to, or examination by, the UK Intellectual Property Office ("IPO").
The 'comparable trade mark (EU)' – hereafter "CM(EU)" – will cover the same sign, in respect of the same goods and services, and will have the same filing or priority date as the EUTM as well as the same renewal date and, where applicable, seniority in the UK (whether claimed based on an earlier UK or International (UK) trade mark). The specification of goods and services will be taken from the English language version of the specification available at the EU IPO; however, anyone with a sufficient interest who does not believe the English version satisfactorily reflects the corresponding EUTM may submit a substitution, verified to the satisfaction of the UK IPO Registrar as corresponding to the authentic text.
The CM(EU) will come into force the day following Exit Day automatically and free of charge. The CM(EU) will be a fully independent UK legal right that can be challenged, assigned, licensed or renewed separately from the EUTM.
In an effort to minimise the administrative burden, the registration number allocated to the CM(EU) will be taken from the last 8 digits of the relevant EUTM prefixed with UK009. Owners of CM(EU) rights will not receive a registration certificate from the UK IPO but they will be able to access details about the right on the UK IPO's online database.
Can I renew my EUTM early to avoid paying additional UK renewal fees?
As the CM(EU) is an independent IP right, a separate renewal fee will apply, payable directly to the UK IPO. Although an EUTM can be renewed up to six months before the renewal date, if an EUTM renewal date falls after Exit Day, early payment of the renewal fee at EU IPO (i.e. before or on Exit Day) will have no effect in respect of the CM(EU). A separate renewal fee (for 10 years' protection) will be payable to the UK IPO – regardless of whether (or when) a renewal action was taken on the corresponding EUTM.
Although usually the UK IPO sends a six-month renewal reminder to UK trade mark owners, as the CM(EU) will have the same renewal date as the corresponding EUTM, the UK IPO will be unable to send renewal notices six months ahead of time for any CM(EU) with upcoming expiry dates – since the CM(EU) would simply not have existed until the day after Exit Day (which could be less than six months before renewal is due).
- Where a CM(EU) has a renewal date which falls more than six months after the day following Exit Day, the UK IPO will adopt its usual practice and the owner will be notified around six months before the CM(EU) is due to expire
- Where a CM(EU) is due to expire within the first six months following Exit Day, the owner will receive a notice from the UK IPO on, or as soon as reasonably practicable after, the expiry of the CM(EU). The owner will then have six months from the date of the notice to renew the CM(EU) – regardless of the previous renewal date. In recognition of this issue, the UK IPO will not require owners to make additional payment for the late renewal. If the CM(EU) is not renewed, it will be removed from the register (but may be restored at a later date in accordance with existing UK law).
Will my pending EUTM application be transferred to the UK register?
The UK Government will not create a CM(EU) in respect of EUTM applications still pending at Exit Day. Instead, applicants will have a right to file a trade mark application with the UK IPO – for the same mark, in respect of the same goods and services (or narrower) than that in the EUTM application – and to retain the same filing date (and/or claim any earlier priority date or UK seniority) as the pending EUTM application, provided the application is filed with the UK IPO within nine months of Exit Day. If the details of the later application do not match the corresponding EUTM application, the owner will not be able to claim the earlier filing (or priority) date(s).
Unlike for CM(EU)s, the application will need to be filed directly with the UK IPO, and will be examined by the UK IPO as if it was a standard UK trade mark application – incurring the usual UK official fees. Given this additional examination, there is no guarantee that the application will be accepted even if the corresponding EUTM application had been or is accepted by the EU IPO.
What if I don't want to be granted a CM(EU)?
If rights-holders of EUTMs do not wish to be granted the new CM(EU), they may opt out from doing so – in which case, they will be treated as if the CM(EU) had never been applied for or registered under UK law. Requests for opt out can only be submitted after Exit Day (as the CM(EU)s do not come into being until such time). The UK Government will in due course make available the notice template to submit such requests.
However, given the consequences of opting out, the option will not be available where, after Exit Day, the CM(EU) is or has been:
- used in the UK by the owner or with its consent
- the subject of an assignment, licence, security interest or other agreement; or
- the basis or subject of proceedings initiated by the owner or with its consent.
The request will need to be submitted to the UK IPO along with details of any person with an interest in the corresponding EUTM since notice must also be given to interested third parties in order for the opt out to have effect. If the UK IPO determines that the opt out request has been inappropriately exercised, it make take steps to reinstate the CM(EU).
What if my question is not answered here?
Please contact any member of our Intellectual Property team if you have any additional questions, such as:
- What happens if I have not recorded a trade mark assignment or change of details at the EU IPO?
- What happens if by EUTM has been restored or reinstated?
- Will the UK allow me to convert by EUTM registration or application?
- What happens to ongoing actions (e.g. court proceedings, cancellation actions, or UK IPO actions) involving an EUTM?
- Can I use evidence from the EU to prove use, or reputation, of my new CM(EU)?
- What will happen with certification and collective marks?
- What will happen with geographical indications?
- Are my licences and security interests still valid and in force in the UK?
 The day which marks the end of the period of time during which the UK will remain in both the EU customs union and the single market, currently 31 December 2020.